Singapore: A Cautionary Tale In Trade Marks Planning

Last Updated: 11 February 2016
Article by Koh C-u Pinn

Arielle Law sincerely wishes everyone a joyful and prosperous 2015 ahead. Happy New Year!

The following is based on the case of Redsun Singapore Pte Ltd v Tsung-Tse Hsieh [2015] SGIPOS 1

Facts

A Taiwanese chain of bubble tea shops owned by Tsung-Tse Hsieh ("Tsung") was planning to expand to Singapore and registered a "Red Sun Tea Shop " logo as a trade mark in Singapore. This was registered in Class 30 in respect of various types of beverages.

Unfortunately for him, Redsun Pte. Ltd. ("Redsun"), a local company that sells green tea and health supplements, had an earlier "Red Sun" trade mark registered in Class 5 for food supplements etc.

Invalidating a Trade Mark

Redsun first sought to have Tsung's registration declared invalid on various grounds, including that it was confusingly similar to the Redsun's earlier trade mark. It was found that the parties' respective specifications of goods for the trade mark were not similar and Redsun did not succeed on this ground.

However, Redsun succeeded in invalidating Tsung's registration under a separate ground of passing off.

Redsun managed to prove that it had already established goodwill in its business under "Red Sun" by selling tea and health supplements, and that allowing Tsung to use his trade mark would likely lead the public to believe that Tsung's goods were the goods of Redsun.

To support its point of possible misrepresentation, Redsun showed that the two businesses were not so far apart in scope. Its evidence was that bubble tea outlets also sold unprepared forms of tea on its premises. For example, "Each A Cup" bubble tea outlets sold tea bags of honey red oolong tea. Conversely, businesses that started out selling beverages in unprepared form also expanded to open shops, examples being Old Town White Coffee, TWG, etc.

Redsun succeeded in showing the elements for passing off and in obtaining a declaration that Tsung's trade mark was invalid.

What can we learn from this?

Primarily, this case shows that in doing due diligence for the registration of trade marks, it is not sufficient to look only at existing trade marks in the specific goods and services classification, or at well-known trade marks. Care must also be taken to anticipate possible scenarios of passing off in order to avoid future disputes.

Originally published on February 6, 2015

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

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